Trademark Registration Benefits

The Benefits of Trademark Registration

Trademark Registration Benefits

Trademark protection is extremely important because it ensures that a company’s brand doesn’t get tarnished by misuse, and that customers don’t get outright stolen by a competitor due to unauthorized use. While common law trademark rights afford a certain level of protection since ownership of a mark is established the moment that mark is used, the best way to ensure that your trademark is truly protected in both the short term and the long term is to register it with the U.S. Patent and Trademark Office (USPTO). The benefits of trademark registration are wide-ranging, including the ability to take legal action if someone ever violates your intellectual property rights. Simply put, making sure that your trademark is officially registered can have a significant impact on your company’s bottom line.

To learn more about the advantages of trademark registration, keep reading this blog.

Why Should You Register Your Trademark with the USPTO?

Although you have common law trademark rights the moment you begin using your product or service, there are a number of exclusive rights that come when you formally register your trademark with the USPTO. Some of the most significant benefits of trademark registration include the following:

  • You get trademark rights in every state and U.S. territory. Regardless of how limited your use may be, official recognition of your mark by the USPTO will give you trademark protection in all 50 states. This could be especially important if a competitor ever infringes on your trademark in a state or region where you don’t normally do business.
  • You can use the trademark registration symbol. You are not allowed to use the trademark registration symbol ® on your product packaging or any other product-related materials (e.g., a website, advertisements, etc.) until your trademark is registered with the USPTO. When people see this symbol, it can offer immediate credibility because they will know that you have obtained an official trademark. Moreover, the ® symbol can also have the effect of discouraging others from possibly trying to infringe on your trademark because they know that doing so will expose them to liability.
  • Your trademark will be entered in the USPTO database. The USPTO maintains an online database of all trademarks that have been officially registered in the United States. The database includes information about the trademark, whether the trademark is registered for a good or service, and the date on which the trademark registered. The federal trademark register serves as notice to anyone who might think about violating your trademark, whether the infringement is intentional or unintentional. The USPTO will be able to quickly identify your trademark in the database if anyone ever attempts to register a similar trademark. Additionally, since all marks listed in the database are enforceable, your competitors will know that you can sue them in federal court if they violate your trademark.
  • You can file a trademark lawsuit in federal court. One of the most important benefits of trademark registration is that you will be able to enforce your trademark with legal action. Although common law trademark rights exist, only a registered trademark holder can file a Lanham Act claim in U.S. district court, which is how you pursue damages when someone violates your trademark. Beyond that, if your case does reach trial, the fact that you have a trademark registration certificate may be sufficient as proof that you own the trademark.
  • You will have trademark licensing rights. Intellectual property rights can be incredibly valuable, and not just because they are enforceable as a way to ensure brand integrity and maintain your share of the market. When your trademark is registered with the USPTO, it will open up another potential revenue stream by allowing you to sell, license, or otherwise transfer your trademark rights in the future.

Contact the Los Angeles Trademark Lawyers at Tauler Smith LLP

The L.A. trademark attorneys at Tauler Smith LLP have a comprehensive understanding of intellectual property laws, and they are ready to protect your interests in both California state court and federal court. Call us anytime at 310-590-3927 to discuss your trademark case. You can also fill out the online contact form to schedule an initial consultation.

Literati Book Club Lawsuit

Literati Book Subscription Lawsuit

Literati Book Club Lawsuit

Literati is a children’s book club and monthly subscription service. The company sends monthly boxes to subscribers, with books organized by age and reading level. When someone wishes to unsubscribe from the service, however, things can become difficult. An investigation by the Los Angeles false advertising lawyers at Tauler Smith LLP has uncovered that many consumers who purchase subscriptions to the Literati Book Club find themselves stuck in a service where there is no manner to unsubscribe after they have signed up through the Literati website. This is a violation of California law, and it may entitle certain subscribers to remuneration.

If you have encountered a problem unsubscribing from Literati, please contact us immediately, as you may be eligible to file a civil lawsuit and receive financial compensation.

Literati Book Club Violates California Automatic Renewal Law

California’s Automatic Renewal Law (ARL), which is codified in Cal. Bus. & Prof. Code §§ 17600, requires businesses to clearly and conspicuously explain to the consumer any automatic renewal offer terms in the contract. More specifically, the ARL requires the automatic renewal offer to have a “cost-effective, timely, and easy-to-use mechanism for cancellation.”

Our legal team believes that Literati violates California law because, among other things:

  1. Literati does not provide subscribers to its book club with an explanation of its cancellation policy before a subscription to the Literati Book Club is purchased.
  2. Literati does not disclose when or how much subscribers will be charged.
  3. Literati does not provide a clear or easy method for subscribers to cancel online.

Literati Book Club May Violate the California Consumer Privacy Act

Tauler Smith LLP is also investigating Literati’s business practice of collecting children’s data in order to “track, profile, and target children with targeted advertising.” Buried in its terms of use, Literati admits that it shares the personal data of subscribers’ children with third parties. This is a significant admission because new privacy laws protect you and your children from companies like Literati.

For example, under the California Consumer Privacy Act (CCPA), online businesses like Literati that track children must ask consumers of their services if they are 16 years of age or older. If Literati does not get valid consent, Literati is engaged in illegal activity. Beyond any possible criminal implications, Literati could also be civilly liable for violating your privacy rights when it harvests the personal information of your children.

Contact the California False Advertising Lawyers at Tauler Smith LLP

The California false advertising attorneys at Tauler Smith LLP are prepared to help you get compensated if you were a victim of false advertising, or if your privacy rights were violated in any way, by the Literati Book Club. Our experienced attorneys represent clients in courts throughout California, and we will provide you with the strongest possible legal representation in your claim against Literati. Call us today at 310-590-3927 or fill out our online contact form.

Trademark Registration

How to Register a Trademark

Trademark Registration

It isn’t technically necessary to register a trademark in order to get trademark protection because common law trademark rights exist as soon as you create and use a trademarkable feature of your brand. However, many companies still decide to register their trademarks with the U.S. Patent and Trademark Office (USPTO) because doing so comes with several advantages, including the ability to file a lawsuit in federal court if you discover a competitor infringing on your trademark rights.

To learn how to register a trademark and protect your intellectual property rights, keep reading this blog.

What Is the Trademark Registration Process?

Registering a trademark is not a simple matter. For starters, you should expect the trademark filing process to take at least eight (8) months even in the best cases, and up to 18 months if there are delays or legal issues with your application.

There are several stages to the trademark registration process, including the following:

  1. Trademark Clearance Search
  2. Prepare & Submit the Application
  3. Monitor Your Trademark Application Status
  4. Review of the Trademark Application
  5. Publication of Your Trademark
  6. Registration Certificate Issued

Stage #1: Trademark Clearance Search

You must first select a name, design, or other type of mark to be trademarked, and the success or failure of your application for formal trademark recognition will hinge on whether another company already has an existing trademark for a similar name or design. So, before submitting your trademark application to the USPTO, either you or an attorney should perform what is known as a trademark clearance search. By looking through the USPTO trademark database, you can make sure that no one else has already registered a similar trademark before you file your application. The federal trademark register provides information about when a trademark was initially registered, its design, and its product application.

In the event that a trademark already exists for a similar product, the USPTO will likely reject your application. If your application is successful despite the existence of a similar product name or design, you could later find yourself exposed to liability when the other company files a trademark infringement claim against you.

Stage #2: Prepare & Submit the Trademark Application

The USPTO has made it easier to register a trademark by allowing individuals to file their trademark applications online. You can set up a USPTO.gov account on the Trademark Electronic Application System (TEAS). Once your online account has been created, you will be able to file your trademark application. There is a non-refundable application/processing fee of up to $350, as well as additional fees if you need to request more time to show your intent to use the mark. (Assuming your trademark application is ultimately successful, you will then need to pay a filing fee for declaration of use after 5 years, and then a renewal fee every 10 years.)

Stage #3: Monitor Your Trademark Application Status

After submitting your trademark application, it will be your responsibility to keep track of its progress. You’ll be able to do this by using the Trademark Status and Document Retrieval (TSDR) system, which provides easy access to your application and registration information, including the status of any documents that you sent to the USPTO, messages about deadlines for submitting additional documents, and the progress of your application. The system can be accessed 24 hours a day, and logging in requires you to enter either the trademark serial number or the trademark registration number.

You are expected to log in and check your trademark application status at least once every six (6) months, and you should continue checking the status until you’ve received notice that your trademark application was successful. You should also make sure that all personal contact information is correct, including your mailing address and your email address.

Stage #4: Review of the Trademark Application

After you file your trademark application, a review will be assigned to a USPTO examining attorney. The examining attorney will first make sure that your application is compliant with all laws and regulations, and then conduct a thorough search for any conflicting trademarks. At the conclusion of the review, the examining attorney will either accept your trademark or refuse to register your trademark.

If your trademark is rejected, the examining attorney will issue an “office action” via official letter. The office action will provide grounds for the refusal by listing any legal issues that exist with the trademark. If these are minor issues that can be easily remedied, you may be allowed to fix them and still get your trademark approved. You or your attorney will need to respond to the USPTO within six (6) months of receiving the office action. Failure to respond in a timely manner will result in your application being considered “abandoned.”

Stage #5: Publication of Your Trademark

If your trademark application is approved with no objections, the mark will be published in the Trademark Official Gazette (TMOG). This is the official journal of the USPTO, and it is published every week on Tuesday. The publication serves as notice to the public of the existence of your trademark. Once the mark is published in the Trademark Official Gazette, other parties will have just 30 days to take action if they wish to oppose your trademark registration. If an opposition is filed by someone who believes that you are attempting to register a trademark that they already own, the case will go before the USPTO Trademark Trial and Appeal Board (TTAB).

Stage #6: Registration Certificate Issued

After 30 days have passed without objection to your trademark since its publication in the Official Gazette, the registration process will enter the final stage. The issuance of a trademark registration certificate won’t happen quickly, so it is imperative that you continue to monitor your application status online. In many cases, it takes another three (3) months before the USPTO officially registers the mark and sends you a registration certificate. You will then need to file all required maintenance documents (e.g., Declaration of Use, Declaration of Incontestability, etc.) in order to ensure that your registration remains active. This can be done through the online system.

What Happens If Your Trademark Application Is Successful?

At the conclusion of the trademark registration process, the USPTO will issue a decision and either accept or reject your trademark application. If the agency accepts your application and grants your trademark, and there is no subsequent opposition to the trademark after notice is published, you will be able to use the trademark registration symbol ® on your product’s packaging and other materials, which is a good way to deter any possible competitors from attempting to use your trademark.

Once your trademark has been officially registered, the USPTO will enter it in an online database. This will serve as legal notice to everyone in the United States and throughout the world that your trademark is enforceable. If anyone ever violates your trademark rights, you will be able to file a lawsuit in U.S. district court.

Contact the L.A. Trademark Attorneys at Tauler Smith LLP Today

The legal team at Tauler Smith LLP includes Los Angeles intellectual property lawyers who have extensive experience representing both plaintiffs and defendants in trademark disputes. If you received a trademark violation letter, or if you need help protecting your trademark against infringement, we can assist you. Call us today at 310-590-3927 or submit the online contact form to schedule a consultation.

Trademark Symbols

When Can You Use Trademark Symbols?

Trademark Symbols

There are three main symbols to indicate trademark rights: TM, SM, and ®. These symbols often appear as subscript or superscript in a product or service’s marketing materials. If you use one of these symbols, it will indicate that you are claiming trademark ownership. This doesn’t automatically establish your trademark rights since the claim may still need to be litigated in the event of a dispute, but placing a trademark symbol near the relevant word, phrase, logo, or design can still serve as a strong deterrent to any competitors who might want to violate your trademark. The key question is: Exactly when can you use trademark symbols? And what are the differences between the trademark symbols?

To find out when you can use the various trademark symbols on your product packaging, advertising materials, etc., keep reading this blog.

The Benefits of a Trademark Symbol

A trademark symbol can let people know that you are claiming ownership of the trademark. In other words, the trademark symbol is a visual cue to anyone who might be looking at your product, putting them on notice that you hold the trademark. For consumers, the symbol indicates that this particular product is associated with your brand, which can put the consumer at ease that what they are about to purchase is the right product. For competitors, the symbol tells them that this product is off limits if they are thinking about copying it and trying to pass it off as their own, an infringement that not only threatens to take away your customers but can also do serious damage to your brand integrity.

What Do the Trademark Symbols TM, SM, and ® Mean?

There are three different trademark symbols that are commonly used:

  1. TM – This is short for “Trademark,” and it is typically used for goods.
  2. SM – This is short for “Service Mark,” and it applies to services.
  3. ® – The R inside a circle signifies that a trademark has been federally registered.

Since you have common law trademark rights the moment you begin using your trademark, you also have a legal right to use the “TM” or “SM” symbols on your product packaging and in ads, depending on whether you want to indicate a trademark (TM) for goods or a service mark (SM) for services. It is only through official registration of your trademark, however, that you can legally use the trademark registration symbol ®.

Restrictions on Use of the Trademark Registration Symbol

It is important to understand that there are certain restrictions on use of the ® symbol, including the following:

  • The trademark registration symbol can only be used by an officially recognized trademark holder, which means that the mark must be registered with the U.S. Patent and Trademark Office (USPTO). If your trademark application is still pending, you are not allowed to use the registration symbol.
  • The trademark registration symbol cannot be used for aspects of your brand that are not listed in the federal trademark register. In other words, the particular good or service must, in fact, be officially trademarked and viewable in the USPTO online database.
  • The trademark registration symbol must be placed near or around the word, slogan, logo, or design that is actually trademarked. It should be clear to the consumer which good or service has been registered.

Contact the California Trademark Attorneys at Tauler Smith LLP

If someone has infringed on your IP rights and you need to enforce a trademark or copyright, having an experienced California intellectual property lawyer on your side can make all the difference. The Los Angeles trademark lawyers at Tauler Smith LLP are here to help you. Call us anytime at 310-590-3927 or submit the contact form to schedule a consultation.

Trade Dress

What Is Trade Dress?

Trade Dress

If you are a business owner, you may know about the various options you have for protecting your intellectual property rights, such as trademark, copyright, and patent rights. Depending on the nature of your business, another IP right that you might possess is trade dress. What is trade dress? In the broadest terms, trade dress refers to the visual appearance of a product or service, or its packaging, that lets consumers know the product’s source.

To learn more about trade dress, including how it differs from trademark, keep reading this blog.

What Kind of Intellectual Property Right Is Trade Dress?

Trade dress is an intellectual property right that specifically applies to the promotional aspects of a product or service. For example, trade dress would protect the packaging of your product against infringement by a competitor, as long as your packaging is unique and can be clearly distinguished from other kinds of packaging. In addition to product packaging, examples of trade dress for a product might include a product display, or even the design of the product itself. For a service, trade dress can apply to the décor or interior design of a business location or space. (E.g., the look, feel, and ambience of a restaurant chain or theme park.)

Just as with trademark rights, trade dress that has been registered with the U.S. Patent and Trademark Office (USPTO) can be protected in court by having an experienced California trade dress attorney file a Lanham Act claim. Trade dress is also similar to trademark in that there are common law trade dress rights: the use of a particular packaging design or logo is what creates trade dress, regardless of whether it is listed in the federal trademark register. If a competitor violates your trade dress by using packaging or other design aspects that might confuse consumers when it comes to the origin of the product, you may need to take legal action.

When Can Trade Dress Be Protected?

While trademark rights can be both common law and statutory, trade dress is typically a common law IP right. That’s because there are significant restrictions on the types of trade dress that may be recognized by the USPTO, and it can be extremely difficult to get your trade dress listed in the federal trademark register. One of the major advantages of receiving official trademark recognition from the USPTO is that the trademark will be enforceable in U.S. district court if you ever need to file a lawsuit against an infringing competitor, and the same is true for trade dress. That’s why, despite the potential difficulties in receiving approval, it may still be worth it to file a trade dress application with the USPTO.

In order to register your trade dress, certain conditions must be met:

  1. The trade dress must be inherently distinctive, or it must have a secondary meaning.
  2. The trade dress must be non-functional.

What Does “Inherently Distinctive” Mean?

An “inherently distinctive” trade dress is generally one that is novel, unusual, and largely inseparable from the product or service itself. In cases involving trade dress infringements, courts tend to issue more favorable rulings for plaintiffs looking to protect trade dress for services as opposed to products. The United States Supreme Court has ruled that the décor of a restaurant can be inherently distinctive in certain circumstances, whereas product designs alone cannot be inherently distinctive without having acquired uniqueness through advertising and consumer reaction.

If a product’s packaging is found to be similar to the packaging for other products on the market, this doesn’t necessarily doom a trade dress claim to failure. That’s because the plaintiff would still have an opportunity to show that, despite the similar packaging used by other brands, this particular brand’s packaging has acquired a “secondary meaning” among consumers who tend to associate the packaging, design, etc. exclusively with the one brand. For example, the design of the Coca-Cola bottle is shaped in a way that has come to be associated with the Coca-Cola brand. Even if other sodas or beverages use a similarly shaped bottle, consumers instantly connect this particular bottle’s shape to Coca-Cola. This is why Coca-Cola would have a viable claim if a competitor infringed on their trade dress.

Functional vs. Non-Functional Trade Dress

Since trade dress tends to focus more on a product’s packaging than on the actual product, courts have held that trade dress can only be protected legally when it involves visual qualities that are used to market a product or service. Although the Coca-Cola bottle is technically functional in that it contains the beverage being sold to consumers, that’s not the source of the company’s trade dress rights. Since a bottle with a different design and shape could serve the same function, it’s clear that the Coca-Cola bottle was designed primarily for advertising and promotional purposes. This non-functional aspect of the bottle’s design is why it can be afforded trade dress protection.

Contact the Los Angeles Trade Dress Attorneys at Tauler Smith LLP

Whether you’ve received a letter alleging a trade dress violation, or you’ve become aware that someone might be infringing on your trade dress, it is imperative that you speak with a knowledgeable intellectual property attorney as soon as possible. The Los Angeles trade dress lawyers at Tauler Smith LLP represent both plaintiffs and defendants in IP cases, and we are prepared to help you resolve your trade dress case.

To get started, call the Tauler Smith legal team at 310-590-3927 or fill out the online contact form.

BuzzFeed Article on Unruly Agency Intimidation

BuzzFeed Article on Unruly Agency Intimidation

BuzzFeed Article on Unruly Agency Intimidation

BuzzFeed recently published an explosive article that provides information about the many allegations of unethical and illegal behavior by Los Angeles-based Unruly Agency. The talent agency has been accused of numerous transgressions: using deception to convince content creators to sign with Unruly, later threatening to sue clients for supposed contract breaches, taking control of clients’ personal bank accounts, and leaking nude photos of clients. All of this has left content creators who sign with Unruly feeling powerless and trapped.

BuzzFeed: Unruly Agency and Behave Agency Accused of Exploiting Online Content Creators

Unruly Agency is a major content marketing agency that represents a number of different influencers on OnlyFans and other social media platforms. Unruly also runs the Behave Agency, another online content management company with operations in Los Angeles. A large part of what Unruly and Behave do involves the day-to-day management of OnlyFans accounts belonging to content creators. This includes selling online content such as videos and photos, publicizing the creators’ work, and responding to messages sent by fans.

Given the staggering rise in the number of subscription-only platforms on the internet in the past few years, the market for online content creators has never been more competitive. Unruly has been able to capitalize on this by positioning itself as a reputable, reliable agency that is passionate about serving its clients. In fact, one of Unruly’s main selling points is that they can help content creators grow their brand by allowing them to reach a larger audience, which will translate into more followers and increased revenue.

For its story on Unruly, BuzzFeed News interviewed no fewer than 18 people and reviewed various documents reportedly showing that the talent agency was often misleading both clients and workers when it came to the details of contracts that were signed. At least two models who signed with Unruly said that company officials waived off their concerns about contract provisions by claiming that they were merely formalities. When the models attempted to get out of the contracts, however, those provisions were suddenly binding.

OnlyFans Models Hire Tauler Smith LLP for Legal Action Against Unruly Agency

Two former clients of Unruly recently enlisted the legal team at Tauler Smith LLP to represent them in civil suits against the talent agency. Both clients are young models whose lives were nearly ruined by Unruly. L.A. social media litigator Robert Tauler filed suit on behalf of the women in Los Angeles County Superior Court, seeking damages and injunctive relief.

Tauler called the typical Unruly contract “a Frankenstein of the worst provisions I’ve seen put together in one contract.” He said the contract is clearly unlawful, and that its main purpose appears to be to manipulate and gain leverage over the young women who make the mistake of signing with Unruly Agency.

Generally speaking, Unruly’s contracts are exploitative and grant the talent agency an unreasonable amount of control over clients’ personal lives. For example, several clients were locked into contracts with automatic renewal provisions. These legally questionable provisions basically forced the models to stay with the agency for at least three (3) years. Additionally, at least one contract used by Behave Agency gave the company authority to take out a life insurance policy on a client, as well as requiring the client to share private medical information with the agency.

OnlyFans Creators Say They Were Victims of Intimidation & Threats by Unruly Agency

One theme that runs throughout the many allegations made against Unruly Agency in the BuzzFeed article is that the company bullies and scares young female models, influencers, and online celebrities. Amia Miley, a former client of Unruly/Behave, said that many of the girls who sign with the agency are worried about retaliation, so they simply don’t say anything.

One OnlyFans model who did speak up said that the company pressured her to publish sexually explicit content on the internet even after she made it clear that she was not comfortable doing so. Remarkably, Unruly and its founders, Tara Niknejad and Nicky Gathrite, actually promote the agency as a strong advocate for female empowerment and women’s rights.

The young models interviewed by BuzzFeed News made several allegations of improper behavior and illegal conduct by Unruly Agency, including the following:

  • Unruly uses deceptive recruitment practices. One of the allegations against Unruly is that the talent agency uses misleading tactics and high-pressure sales pitches to convince content creators to sign long-term contracts.
  • The contracts signed by clients are unclear. The contracts that some clients signed allegedly included terms that conflicted with the terms discussed during contract negotiations with Unruly agents. For example, clients have reported specific details missing from the written contracts after Unruly had explicitly agreed to those details in conversations.
  • Unruly uses the threat of costly lawsuits to intimidate clients. Once an OnlyFans creator signs with Unruly, they are locked into what some are calling an exploitative contract. If the client later wants to opt out of the contract and leave the agency, they are reportedly threatened with a six-figure lawsuit that could cause financial ruin.
  • Unruly publishes nude images without consent. At least one OnlyFans model has accused Unruly of secretly taking nude photographs of her while she was changing clothes during a photo shoot. Moreover, the model says that the agency later released those nude images on social media without her knowledge or consent.
  • Unruly takes control of clients’ personal bank accounts. Multiple models said that Unruly switched out the banking information on their OnlyFans accounts, essentially replacing the client bank account with the agency’s bank account. As a result, Unruly initially gets all of the income generated on OnlyFans, and then the clients are entirely dependent on the talent agency to pay out any money earned. Additionally, at least one client said that the agency was repeatedly late when it came to making payments.

Unruly Agency Also Accused of Exploiting Workers and Committing Wage Theft

According to the BuzzFeed investigation of Unruly Agency’s business practices, the company’s exploitative tactics are not limited to just clients. A number of current and former workers for Unruly have accused the agency of violating California employment laws by misclassifying the employees as independent contractors so that they could illegally underpay them. At least six (6) workers are reportedly planning to file lawsuits against Unruly for wage theft.

Contact Los Angeles Social Media Lawyer Robert Tauler

Although the BuzzFeed article focuses on alleged abuses of power and unlawful conduct by Unruly Agency, it also serves to highlight a broader problem among many talent agencies in California that routinely take advantage of OnlyFans creators, Instagram models, and other social media influencers. If you are a content creator or influencer who has been exploited by a talent agency, Los Angeles social media litigator Robert Tauler and the Tauler Smith LLP legal team can help you. Call 310-590-3927 or submit the contact form.

BuzzFeed

Unruly Agency Accused of Exploiting OnlyFans Creators

BuzzFeed

A growing chorus of clients and current and former workers at the social media management company Unruly say the agency has engaged in deceptive recruitment practices that locked them into agreements threatening six-figure penalties for contract breaches and handing over expansive control of their personal lives, while demanding work they hadn’t realized they’d signed up for and, in some cases, publishing nude images of them without their consent.

Read the full article on BuzzFeed.

Trademark Infringement Defenses

Best Defenses to Trademark Infringement Claims

Trademark Infringement Defenses

A trademark is supposed to provide protection against infringement by a company that misleadingly uses another company’s slogan, logo, or design to confuse consumers about a product’s origin. But it is sometimes the case that a trademark infringement claim is brought in bad faith by a plaintiff who either misunderstands the law or who is trying to make a quick buck. When this happens, it may be necessary to secure the services of an experienced California intellectual property lawyer who understands IP law and who can offer the best defenses to trademark infringement claims.

To learn more about strong defenses that may be raised in your trademark infringement case, keep reading this blog.

What Defenses Are Available in a Trademark Dispute?

A trademark dispute often arises when one company is accused of interfering with another company’s branding and marketing strategies. If you received notice that your company has infringed on someone else’s trademark, a knowledgeable Los Angeles trademark lawyer can help you explore your best options for contesting the claim.

Some of the most common trademark defenses include the following:

  • Non-Infringement: When a person or company sells or markets a product, good, or service that has a similar name, logo, or design to another product in the marketplace, it may constitute a violation of the other party’s exclusive trademark rights. If the other party has a registered trademark with the U.S. Patent and Trademark Office (USPTO), that party may then seek to bring an end to the unauthorized use of the trademark by filing a lawsuit. But if the goods or services in dispute are not similar in such a way that they are likely to confuse the average consumer, then you may be able to defend yourself against a trademark infringement claim by asserting that there was no infringement at all.
  • Fair Use: If a competitor’s use of the mark is likely to cause confusion among consumers, then it could constitute trademark infringement. But there are still limits on exactly what kind of words or designs can be trademarked, and the trademark fair use defense establishes one of those limits. The more generalized or broad a particular use is, the less likely a court is to enforce the trademark. For example, a fruit company with a symbol or design incorporating a red apple may not be able to enforce its trademark, whereas a computer company logo incorporating a multi-colored apple with a piece missing from the side might constitute a violation of Apple’s trademark rights because it is likely to cause confusion between the brands. In other words, any use of a word or symbol that matches that word or symbol’s plain meaning may constitute a fair use, while other uses may not constitute a fair use.
  • Prior Use: “Prior use” is exactly what it sounds like. Basically, if you can show that you were using the trademark before the other party, then any subsequent use by them would be an infringement on your trademark rights. Since trademark rights are established by actual use, it won’t necessarily matter whether the other party had already registered their trademark.
  • Different Markets: Even if a particular product is only sold in one state, the product’s trademark is protected in every state across the country. If the products are sold exclusively in certain markets, however, then brand confusion may be unlikely, and the company might find it difficult to enforce the trademark in the other market.
  • Abandonment: Sometimes, the fact that a trademark was registered isn’t enough to protect it against use by another company. For example, if the trademark registrant has failed to use the trademark for a period of at least three (3) years, this may be considered “abandonment” of the trademark rights. That’s because trademark rights can only be enforced when the trademark is being actively used, and it won’t matter if the abandonment was unintentional. Additionally, a trademark registrant must also vigorously enforce their trademark or risk losing their trademark rights. (Along those same lines, if you are a trademark owner and you wish to protect your rights, you may need to file a trademark renewal application with the USPTO every 10 years.)

Contact the Los Angeles Trademark Lawyers at Tauler Smith LLP

If you’ve been served notice of a trademark violation lawsuit, the skilled Los Angeles trademark attorneys at Tauler Smith LLP can help you raise effective defenses against the infringement claim. Depending on the circumstances, it may be possible to avoid costly legal action by getting the case dismissed early in your favor, or by reaching an agreement with the plaintiff to drop their claim.

Call us today at 310-590-3927 or fill out the firm’s contact form.

Copyright vs Trademark vs Patent

Copyright vs. Trademark vs. Patent

Copyright vs Trademark vs Patent

“Intellectual property” covers a wide range of business assets, such as books, screenplays, photos, movies, computer software code, inventions, and formulas. Copyrights, trademarks, and patents are the main types of intellectual property. Federal law provides strong protections for the creators of original works, inventors, and licensors of IP rights, but the law is complex. In fact, people often confuse copyright, trademark, and patent because each kind of intellectual property protects creators or licensors against unauthorized use or infringement by others, but they do so in different ways. If you are involved in an intellectual property dispute, you need to have a solid understanding of what the law says with respect to copyright vs. trademark vs. patent.

To learn more about the differences between copyright law, trademark law, and patent law, keep reading this blog.

What’s the Difference Between Copyrights, Trademarks, and Patents?

Intellectual property can be an extremely valuable business asset. That’s why it is important that only the rightful owner of the asset’s IP rights be allowed to exploit the intellectual property for profit, whether that involves selling it or licensing it. The three most common tools used to protect the intellectual property rights of certain types of assets are:

  1. Copyrights
  2. Trademarks
  3. Patents

Copyrights

As set forth in the Copyright Act of 1976, copyright protects original creative works like novels, songs, paintings, videos, photographs, drawings, clothing, jewelry, and even websites. Only the copyright holder may copy, sell, perform, or display the work for profit, or license the work to someone else for commercial reproduction, distribution, performance, or display.

When it comes to securing copyright ownership, the original creator of a work technically doesn’t need to do anything to acquire the copyright of that work. But there are a number of benefits only available to those who actually register their copyright with the U.S. Copyright Office. For example, if someone does infringe on your copyright, you will first need to file for copyright registration before you can bring a lawsuit in federal court to enforce your copyright. Additionally, copyright registration will probably make it easier for you to back up your case in court because there will be a public record of the copyright claim: all officially copyrighted works published after 1978 are deposited with the Copyright Office and entered into an online database.

Trademarks

While copyright applies to original works of authorship, a trademark covers unique words, phrases, slogans, symbols, and designs that can be used to identify a good, product, or service. A requirement for a company trademark is that the name or logo being trademarked should distinguish the product or service from any other products or services. For example, the product name for Coca-Cola is trademarked because it stands out from all other soft drinks on the market, and everyone who hears the name knows exactly what it refers to.

Just as with copyright law, a trademark does not actually have to be registered in order to get trademark ownership. Even without registering the trademark, you can still use common law to protect against trademark infringement by competitors who attempt to copy the look of your product and pass it off as their own. Just as with copyright law, however, official registration of your trademark comes with certain advantages, including the ability to file a lawsuit in federal court to enforce your trademark against unauthorized use.

To get trademark protection solely within your home state, or in the state where you conduct business, you must register with that particular state. To get federal trademark protection that crosses state boundaries, you must file a trademark registration application with the United States Patent and Trademark Office (USPTO). Once you’ve registered your trademark, you will be allowed to use the registered trademark symbol (®). Otherwise, you are limited to the common law trademark symbol (™).

Patents

Generally speaking, patent law protects inventors by giving them the exclusive right to make, use, copy, or sell their inventions or discoveries, or to license their inventions to another person or entity. Obtaining a patent can be extremely difficult, and it often requires the assistance of an experienced intellectual property lawyer.

Unlike with copyrights and trademarks, the only way to avail yourself of patent protection is to apply for and be granted a patent by the U.S. Patent and Trademark Office (USPTO), the same agency that handles trademark applications. Absent patent registration, the formula or process used in the invention may be considered a “trade secret.” The main advantage to obtaining a patent is that you can then sue anyone who infringes the patent by using or selling your invention without consent. But patent registration does come with a significant downside: you must publicly disclose the unique process or composition of your product. For certain companies that wish to maintain trade secrecy (e.g., pharmaceutical drug manufacturers), this can present a dilemma.

Contact the California Intellectual Property Lawyers at Tauler Smith LLP

If someone has infringed on your exclusive intellectual property rights, or if you have been accused of violating someone else’s intellectual property rights, your best move is to speak with a knowledgeable IP lawyer immediately. The California intellectual property attorneys at Tauler Smith LLP, with a main office in Los Angeles, are prepared to help you bolster your IP claim or build a strong defense against an accusation of copyright or trademark infringement. Call us now at 310-590-3927 or fill out the online contact form.

Copyright Ownership

Determining Copyright Ownership

Copyright Ownership

When it comes to determining copyright ownership, it helps to understand exactly what a copyright is and who can benefit from a copyright. Copyright is a form of intellectual property that provides the creators of original works of authorship with protection against infringement by competitors or anyone else who is not authorized to use, display, or present the work for profit. The general idea behind copyright protection is that painters, photographers, filmmakers, authors, and other artists will be motivated to continue producing if they know that no one else will be able to steal or otherwise misappropriate their work. Importantly, it is only the author of the work, or a person to whom the author has licensed their IP rights, who can legally claim copyright ownership.

To learn more about how to determine who owns a copyrighted work, keep reading this blog.

Who Owns the Copyright for a Creative Work Generally?

Copyright protection applies to most creative works, including films, book manuscripts, photographs, songs or sound recordings, and even computer software. If you have created one of these types of works, then it will typically be assumed that you are the person who holds the copyright. If you were not the author and you want to have the copyright assigned to you, it is best to do so in writing. That’s because mere possession of a work – even if it is the only copy of that work – is not the same as copyright ownership. In other words, if the author sells you the actual work (e.g., an original book manuscript), that might not be the same thing as selling you the work’s copyright ownership.

The bottom line is that, in the absence of a contract to transfer the copyright, the default rule will usually be that the copyright is owned by the work’s original author or creator.

Who Owns the Copyright for Joint Works?

A joint work is defined as an original work that was created by two or more people. Copyright disputes can arise when a work has more than one author because each of the authors is considered a co-owner of the copyright. This means that each author has the ability to license the copyright, as long as they share the licensing profits with the other copyright owners. It is also possible for joint authors to reach an agreement in advance of publication, or after the fact, to transfer sole ownership of the copyright to a single person.

Copyright Ownership of Works Made for Hire

In certain situations, it’s not the actual author of the work who gets copyright ownership but instead someone else who derives their intellectual property rights from the original author. For example, if the author was an employee who created a work for hire during the course of their job duties, then it is usually the employer who gets copyright ownership and who can profit off the work in the future.

Works Created by Employees

Section 101 of the United States Copyright Act addresses works made for hire. As set forth by the statute, a work that was prepared by an employee acting within the scope of their employment constitutes a work for hire.

Works Created by Non-Employees

What about works created by non-employees, such as independent contractors or freelancers? The federal copyright law stipulates that, in these situations, an employer may be the copyright holder of a work if that work was specifically commissioned for use in one of the following ways:

  1. A contribution to a collective work.
  2. Part of a film, video, or other audiovisual project.
  3. A translation of another work.
  4. A supplement to another work.
  5. A compilation.
  6. An instructional text.
  7. A test or answers to a test.
  8. An atlas.

Keep in mind that even if the work fits into one of the above categories, there should still be a signed agreement between the parties in order for ownership of the copyright to transfer from the original author to the company or other party. The presence, or absence, of a written contract stipulating that the work is, in fact, a work made for hire will go a long way toward determining copyright ownership.

Involved in a Copyright Dispute? Contact the Los Angeles Copyright Lawyers at Tauler Smith LLP

If you are involved in a copyright dispute, the Los Angeles copyright lawyers at Tauler Smith LLP can help you. Our legal team has experience representing clients in intellectual property cases involving copyright infringement, trademark infringement, and other IP claims. Call us now at 310-590-3927 or submit the online contact form.